Ex Parte Green

Patent Trial and Appeal Board

Apr 18, 2018

13247456 (P.T.A.B. Apr. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/247,456 09/28/2011 Margaret Helen Green
49845 7590 04/20/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.937US 1 5165
EXAMINER
SHU!, MING
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
04/20/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARGARET HELEN GREEN
Appeal2017-001313
Application 13/247 ,456 1
Technology Center 3600
Before CARL W. WHITEHEAD JR., NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1, 2, 4, 6-9, and 11-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies eBay Inc. as the real party in interest. App. Br. 2.
Appeal2017-001313
Application 13/247,456
STATEMENT OF THE CASE
THE INVENTION
According to Appellant, the invention relates to "systems and methods
of offering a collection for sale." Spec. i-f 2.
Exemplary independent claim 1 is reproduced below.
1. A publishing system comprising:
one or more hardware processors; and
one or more modules incorporated into the publishing
system, the one or more modules implemented by the one or
more hardware processors of the publishing system, the one or
more modules to specially-configure the publishing system to
perform operations comprising:
receiving a description of a collection and descriptions of
items in the collection from a device of a seller;
based on receiving the description of the collection and the
descriptions of the items in the collection, causing a publishing
of a description of an offer for sale of the collection as a whole,
according to a first offering type, in user interfaces of one or more
devices of one or more potential buyers, the description of the
sale of the collection as a whole including a reserve price for the
collection as a whole and a bias price for the collection as a
whole, the bias price being an amount of money the seller is
willing to lose by selling the collection as a whole rather than as
individual items;
causing a publishing of descriptions of offers for sale of
the items in the collection as individual items, according to a
second offering type, concurrently with the description of the
offer for sale of the collection as a whole in the user interfaces of
the one or more devices of the one or more potential buyers;
based on a conclusion of an offering period for the
collection as a whole and the items, comparing a sum of bids for
the items to a bid for the collection as a whole and the bias price,
the bids for the items and the bid for the collection as a whole
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being received from the one or more devices of the one or more
potential buyers;
determining that the collection is sold as a whole based on
the comparison of the sum of the bids for the items to the bid for
the collection as a whole and the bias price; and
based on the determining that the collection is sold as a
whole, causing a presentation related to the determining that the
collection is sold as a whole in the user interfaces of the one or
more devices of the one or more potential buyers.
REJECTION
Claims 1, 2, 4, 6-9, and 11-20 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception to statutory subject matter. Final Act. 4---6.
DISCUSSION
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. The Court
acknowledged in Mayo that "all inventions at some level embody, use,
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reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). If the claims are
not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination,' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78-79).
STEP ONE OF ALICE/MAYO FRAMEWORK
Findings and Contentions
Under the first step of the Alice/Mayo framework, the Examiner finds
"the claims are directed to the judicial exception of shopping/conducting
auctions which is considered to be an abstract idea inasmuch as such activity
is considered both a fundamental economic practice and a method of
organizing human activity." Final Act. 4. The Examiner notes that
fundamental economic practices have been recognized as unpatentable
subject matter by the Supreme Court in Alice and in Bilski v. Kappas, 561
U.S. 593 (2010). Ans. 3.
Initially, Appellant argues the Examiner has not established a prima
facie case that the claims are directed to unpatentable subject matter. App.
Br. 11-24. For example, citing USPTO Guidance on Patent Subject Matter
Eligibility, Appellant argues the Examiner has not explained clearly and
specifically why any of the rejected claims are allegedly directed to
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"shopping/conducting auctions." App. Br. 12. Therefore, according to
Appellant, "the Office Action failed to provide sufficient notice for Appellant
to effectively respond to these rejections." App. Br. 12. Appellant also
argues that "shopping/conducting auctions" is an Examiner-written phrase
that abstracts the claim and omits limitations. App. Br. 13. Appellant
argues the Examiner has not shown the alleged abstract idea is similar to at
least one concept courts have identified as an abstract idea. App. Br. 15-18.
Appellant alleges the Examiner did not consider the dependent claims
separately under the Alice/Mayo two step test and dismissed them without
analysis. App. Br. 14--15.
Appellant further argues the claims are not directed to a fundamental
economic practice long prevalent in our system of commerce. App. Br. 25.
For example, Appellant points to the fact that the Examiner withdrew the
§ 103 rejection as evidence that the claims are directed something new and
therefore not to a practice that is long prevalent. App. Br. 25. Appellant
further notes that several limitations require the use of computerized
technology and are rooted in computer technology, such as publishing
information about items for sale on client devices, and argues this is further
evidence that the claims are not directed to practices that have been long
prevalent. App. Br. 25.
Analysis
We are unpersuaded by Appellant's arguments. With respect to
Appellant's arguments that the Examiner has failed to present a prim a facie
case, we disagree. To the extent Appellant suggests that USPTO Guidance
(e.g. 2014 Interim Eligibility Guidance, July 2015 Update, or May 2016
Memorandum) requires particular steps be performed in specific ways to
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establish that a claim is directed to an abstract idea, i.e., a "prima facie" case,
Appellant is mistaken. Instead, 35 U.S.C. § 132 sets forth a more general
notice requirement whereby the applicant is notified of the reasons for a
rejection together with such information as may be useful in judging the
propriety of continuing with prosecution of the application. Our reviewing
court has explained:
[A ]ll that is required of the [USPTO] to meet its prima facie
burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of § 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We have reviewed the
decision to reject the claims for patent-ineligibility articulated by the
Examiner (see Final Act. 4---6; Ans. 2-7) and find it meets the notice
requirements of 35 U.S.C. § 132. The Examiner has set forth the statutory
basis for the rejection (a judicial exception to 35 U.S.C. § 101) and
explained the rejection in sufficient detail to permit Appellant to respond
meaningfully. As for the dependent claims, the Examiner notes they either
add further definitions to terms used in claim 1 or recite modules the receive
and process data for items to be sold. Final Act. 5---6. The Examiner
concludes these dependent claims do not offer substantially more than the
base claim from which they depend and hence the independent claim's
analysis applies to the dependent claims as well. Final Act. 5-6. This
provides Appellant with sufficient notice to respond meaningfully to the
Examiner's rejection.
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We tum next to the Examiner's determination that the claims are
directed to an abstract idea. "The 'abstract idea' step of the inquiry calls
upon us to look at the 'focus of the claimed advance over the prior art' to
determine if the claim's 'character as a whole' is directed to excluded
subject matter."' Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016)); see also Enfish, 822 F.3d at 1335 ("[T]he
'directed to' inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether 'their character as a whole is directed
to excluded subject matter."' (citation omitted)).
In this regard, the Specification explains that when an online seller
wishes to sell a collection of items, the seller typically must decide whether
to sell the collection as a whole, or as individual items, but may not want to
make such a decision until more is learned about the value of the items or
the value of the collection as a whole. Spec. i-f 14. Thus, the invention
allows the seller to publish a listing of the collection as a whole while
simultaneously publishing separate listings describing the respective
individual items in the collection. Spec. i-f 15. When the sale ends, the
system determines whether to sell the collection as a whole, or to sell the
collection as individual items based on the bids received for the collection as
a whole and for the individual items. Spec. i-f 31.
Consistent with this description, claim 1 recites a publishing system
that receives a description of a collection of items from a device of a seller,
publishes a description of an offer for sale of the collection as a whole on
certain user devices the description including a reserve price and a bias
price, publishes descriptions of the items for sale in the collection as
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individual items, determines whether to sell the collection as a whole or to
sell as individual items based on the bids and the bias price, and if the
collection is to be sold as whole, presenting the sale as a whole on user
interfaces of devices of potential buyers.
Based on a review of the Specification and the claims as whole, as
outlined above, it is evident the claims are directed to selling a collection of
items and determining whether the collection should be sold as a whole or as
individual items. Thus, we agree with the Examiner's characterization of the
claims as being directed generally to "shopping/conducting auctions" (Final
Act. 4) and that, as such, they are directed to a fundamental economic
practice.
The claim limitations that Appellant argues the Examiner omits or
ignores (see App. Br. 13-14) relate directly to selling the collection of items
or to actions that facilitate the sale, such as receiving information about the
items, publishing descriptions of the collection or of the individual items, or
calculating whether to sell the collection as a whole or as individual items.
These limitations do not change the character of the claims as a whole away
from the abstract idea, and, if anything, reinforce the conclusion that the
claims are directed to an abstract idea. The fact that some of the steps are
performed using generic computer hardware does not change the analysis.
STEP Two OF ALICE/MAYO FRAMEWORK
Findings and Contentions
Under step two of the Alice/Mayo framework, the Examiner finds
"[t]he elements of the instant process, when taken alone, each execute in a
manner routinely and conventionally expected of these elements." Final
Act. 5. The Examiner adds that "[t]he computing device and apparatuses to
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implement the process are generic computers with functionalities which are
well-understood, routine and conventional activities previously known to the
industry." Id. Looking at the claim elements as an ordered combination, the
Examiner finds "the elements involved ... are well-understood, routine and
conventional. The elements together execute in routinely and
conventionally accepted coordinated manners and ... is merely the
combined and coordinated execution of generic computer functionalities
which are well-understood, routine and conventional." Final Act. 5.
Appellant analogizes the claimed method to a claim (claim 2) set forth
in Appendix 1 of the "July 2015 Update on Subject Matter Eligibility," 80
Fed. Reg. 45429 (July 30, 2015) ("Transmission of Stock Quote Data") and
argues the claims here "include meaningful limitations that add more than
generally linking the use of the abstract idea (the general concept of
shopping/conducting auctions) to the Internet, because they solve an
Internet-centric problem with a claimed solution that is necessarily rooted in
computer technology, similar to the additional elements in DDR Holdings."
App. Br. 21. Appellant also points to portions of the Specification
describing the invention as directed to "online auction systems and
marketplaces" that forms "a network-based marketplace or publication
system" and is deployed using servers and client machines over the Internet
as support for the argument that the claims are rooted in computer
technology. App. Br. 21-22.
We disagree. As explained above, nearly all of the claim limitations,
even when viewed individually, are directed to selling or auctioning a
collection of items. The claims recite a few generic computer hardware
elements, such a "hardware processors" or "modules," but these are used in
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their routine and conventional ways and therefore do not amount to
significantly more than the abstract idea. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (recitation of generic
computer elements does not make a claim directed to an abstract idea patent-
eligible ). The limitations involving publishing descriptions of the items, or
of the ultimate sale on client devices, are directed simply to displaying
information on a screen, and are akin to limitations the Federal Circuit has
found do not add significantly more to an abstract idea. Electric Power
Group, LLC, v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("The focus of
the asserted claims ... is on collecting information, analyzing it, and
displaying certain results of the collection and analysis."). Hence, contrary
to Appellant's assertion, the claims are not directed to an Internet-centric
problem. The limitations highlighted by Appellant are simply a field of use
attempting to limit the abstract idea to a particular technological
environment, and do not add significantly more.
Appellant further argues "claim 1 clearly does not seek to tie up any
judicial exception so that others cannot practice it" (App. Br. 23), the steps
of the claim are specified at a low level of generality (App. Br. 27-28), and
that the steps of the claim, such as the step of comparing the bids for the
collection as whole to the bids for the individual items when the offering
period ends, are not conventional (App. Br. 28-29).
These arguments are also unpersuasive. "While preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The
limitations Appellant argues are written at a low level of generality, or that
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are not conventional, are nonetheless directed to the abstract idea itself or
add abstract steps to an already abstract idea. For example, the step of
comparing bids to determine whether to sell the collection as a whole or to
sell the items individually is based on abstract mathematical calculations and
does not transform the claim to something more than the abstract idea.
"Adding one abstract idea (math) to another abstract idea (encoding and
decoding) does not render the claim non-abstract." Recognicorp v.
Nintendo, 855 F.3d 1322, 1327 (Fed. Cir 2017).
CONCLUSION
Accordingly, we sustain the Examiner's rejection of the claims under
35 U.S.C. § 101 as directed to a judicial exception to statutory subject
matter.
DECISION
The Examiner's rejection of claims 1, 2, 4, 6-9, and 11-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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